To: | Health Fusion Brands, Inc. (docketing@youngbasile.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85491698 - RIPTIDE - RWR-121-TM |
Sent: | 3/20/2012 4:48:01 PM |
Sent As: | ECOM102@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 85491698
MARK: RIPTIDE
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Health Fusion Brands, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 3/20/2012
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES
1) Likelihood of Confusion Refusal under Section 2(d) of the Trademark Act.
a. Refusal is limited to International Class 25 only.
2) Identification of Goods Requirement for International Class 25
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION; INTERNATIONAL CLASS 25 ONLY
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 3353749 and 3378004. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.
In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.
The applicant has applied for registration of the proposed mark, RIPTIDE and design. The registrant’s mark are LA RIPTIDE and design (LA is disclaimed) and RIPTIDE.
In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).
In the present case, the respective marks are highly similar in appearance, sound, commercial impression and connotation. The marks are compared in their entireties under a Trademark Act Section 2(d) analysis. See TMEP §1207.01(b). Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression; greater weight is given to that dominant feature in determining whether the marks are confusingly similar. See In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); TMEP §1207.01(b)(viii), (c)(ii).
The word portions of the marks are nearly identical in appearance, sound and meaning. The addition of the design element does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii). In the instant case, the dominant feature of the marks of the parties are identical: RIPTIDE.
With respect to the similarities of the goods of the parties, the goods of the applicant are merely identified as “clothing.” The goods of Registration No. 3353749 are identified as “Clothing, namely, shirts, T-shirts, polo shirts, jerseys, uniforms, shorts, boxer shorts, tops, crop tops, tank tops, halter tops, sweat shirts, sweat pants, warm-up suits, track suits, fleece vests, pullovers, jackets, caps, hats, visors, headbands, headwear, gloves, mittens, rainwear, footwear, and sneakers.” The goods of Registration No. 3378004 are identified as “Men's, women's and children's apparel, namely, shorts, shirts, jackets and footwear.”
The goods of the parties need not be identical or directly competitive to find a likelihood of confusion. See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i). Rather, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods come from a common source. In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
In the present case, the goods of the parties could well be presumed to be from the same source inasmuch as the goods of the parties relate to clothing items. As indicated above, the applicant merely lists its goods as “clothing.” The goods of the registrants are very specific as to the nature of its goods. Neither the application nor the registration(s) contains any limitations regarding trade channels for the goods and therefore it is assumed that registrant’s and applicant’s goods are sold everywhere that is normal for such items, i.e., clothing and department stores. Thus, it can also be assumed that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold under the same or similar marks. See Kangol Ltd. v. KangaROOS U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994); TMEP §1207.01(a)(iii).
Consequently, the goods of the present parties clearly move in the same normal channels of trade, are available to all potential customers and may be utilized for the same or similar (i.e., related) purposes by the same classes of purchasers.
Accordingly, based on the highly similar nature of the marks and the similarity of the goods of the parties, there is a likelihood of confusion under Section 2(d) of the Trademark Act.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.
REFUSAL PERTAINS TO ONE OF TWO INTERNATIONAL CLASSES
(1) Deleting the class to which the refusal pertains;
(2) Filing a request to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition in the class to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq., (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).; or
(3) Amending the basis for that class, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
A request to divide can be filed either on paper via regular mail or online via the Trademark Electronic Application System (TEAS). TMEP §1110.04. The request must specify the classes or goods and/or services that are to be divided out of the application and include the required fee of $100.00 for each new application created. See 37 C.F.R. §§2.6(a)(19), 2.87(b). If dividing out some, but not all, of the goods or services within a class, applicant must additionally submit the application filing fee for each new separate application created by the division. 37 C.F.R. §§2.6(a)(1)(i)-(iii), 2.87(b); TMEP §1110.02.
Any outstanding deadline in effect at the time the application is divided will generally apply to each new divided out application. See 37 C.F.R. §2.87(e); TMEP §1110.05 (see list of exceptions).
A request to divide must be properly signed by the applicant or an authorized attorney. See 37 C.F.R. §§2.87(f), 2.193(e)(2), 11.14; TMEP §§611.03(b), 1110.06.
Where an applicant is represented by an attorney, the attorney must sign the request. 37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 1110.06. The only attorneys who may sign requests and otherwise practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and (2) Canadian agents/attorneys who represent applicants located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO. See 37 C.F.R. §§2.17(e), 2.87(f), 11.1, 11.5(b)(2), 11.14(a), (c); TMEP §§602, 611.03(b), 1110.06. Foreign attorneys, other than authorized Canadian attorneys, do not have authority to sign requests or otherwise represent applicants before the USPTO. See 37 C.F.R. §§2.17(e), 11.5(b)(2), 11.14(c), (e); TMEP §§602.03(b)-(c), 611.03(b), 1110.06.
Where an applicant is not represented by an attorney, the request must be signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06 et seq., 1110.06. In the case of joint applicants, all must sign. 37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a).
In addition, the proper signatory must personally sign or personally enter his/her electronic signature. 37 C.F.R. §2.193(a), (e)(2); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).
IDENTIFICATION OF GOODS; INTERNATIONAL CLASS 25 ONLY
The wording “clothing” in the identification of goods must be clarified because it is too broad and could include goods in several international classes. See TMEP §§1402.01, 1402.03. Examples of acceptable identifications include the following: “clothing for protection against accidents, irradiation and fire” in International Class 9; “surgical gowns” in International Class 10; “pet clothing” in International Class 18; and “shirts, shorts and pants” in International Class 25. Therefore, applicant must amend the identification to specify the type of clothing.
If applicant’s clothing is classified in International Class 25, applicant should insert the word “namely,” after “clothing” and indicate the specific types of clothing items (e.g., shirts, pants, coats, dresses).
Applicant may adopt the following identification, if accurate:
“Clothing, namely, [Specify exact nature of the goods by their common commercial name, i.e., shirts, pants, sweaters, jackets, coats, shorts, dress shirts, shoes, boots, skirts, dresses, blouses, belts, bras, t-shirts, sweatshirts, panties, suits, and scarves],” in International Class 25.
An applicant may amend an identification of goods only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
PLEASE NOTE: The identification of goods for International Class 32 are accepted and entered as submitted.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to live status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
PLEASE NOTE: Because it delays processing, submission of duplicate papers is discouraged. Unless specifically requested to do so by the Office, parties should not mail follow up copies of documents transmitted by fax. Cf. ITC Entertainment Group Ltd. V. Nintendo of America Inc. 45 USPQ2d 2021 (TTAB 1998).
Howard Smiga /hs/
Trademark Attorney
Law Office 102
571-272-9220 Office
571-273-9102 Fax
Howard.Smiga@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.